The full case caption appears at the
end of this opinion. CLEVENGER,
Circuit Judge. Anita Dembiczak and Benson Zinbarg appeal the rejection, upheld by the Board ofPatent Appeals and Interferences, of all pending claims in their ApplicationNo.�08/427,732.
See Ex Parte Dembiczak, No. 96-2648, slip op. at 43 (May 14, 1998). Because the Board erred in sustaining rejections of the pending claims as obvious under35 U.S.C. ��103(a) (Supp. 1998), and for obviousness-type double patenting, we reverse. I The invention at issue in this case is, generally speaking, a large trash bag madeof orange plastic and decorated with lines and facial features, allowing the bag, when filledwith trash or leaves, to resemble a Halloween-style pumpkin, or jack-o’-lantern. As theinventors, Anita Dembiczak and Benson Zinbarg (collectively, “Dembiczak”) note, theinvention solves the long-standing problem of unsightly trash bags placed on the curbs ofAmerica, and, by fortuitous happenstance, allows users to express their whimsical orfestive nature while properly storing garbage, leaves, or other household debris awaitingcollection. Embodiments of the invention–sold under a variety of names, including GiantStuff-A-Pumpkin�, Funkins, Jack Sak�, and Bag-O-Fun�–have undisputedly been well-received by consumers, who bought more than seven million units in 1990 alone. Indeed,in 1990, the popularity of the pumpkin bags engendered a rash of thefts around Houston,Texas, leading some owners to resort to preventative measures, such as greasing thebags with petroleum jelly and tying them to trees.
See R. Piller, “Halloween Hopes Die onthe Vine,”
Hous. Chron., Oct. 19, 1990, at 13A. The road to profits has proved much easier than the path to patentability, however. In July 1989, Dembiczak filed a utility patent application generally directed to the pumpkinbags. In a February 1992 appeal, the Board of Patent Appeals and Interferences (“theBoard”) reversed the Examiner’s rejection, but entered new grounds for rejection. Dembiczak elected to continue prosecution, filing a continuation application to address thenew grounds for rejection. Thereafter, the invention made a�second appearance beforethe Board, in April 1993, when the Board both sustained the Examiner’s rejection andagain entered new grounds for rejection. Again, a�continuation application was filed (theinstant application). And again the Examiner’s rejection was appealed to the Board, whichsustained the rejection in a May 14, 1998, decision.
See Dembiczak, slip op. at 43. A The patent application at issue includes claims directed to various embodiments ofthe pumpkin bag. Claims 37, 49, 51, 52, 58 through 64, 66 through 69, and 72 through 81are at issue in this appeal. Though the claims vary, independent claim 74 is perhaps mostrepresentative: 74. A decorative bag for use by a user with trash filling material, the bagsimulating the general outer appearance of an outer surface of apumpkin having facial indicia thereon, comprising: a flexible waterproof plastic trash or leaf bag having an outer surface which is premanufactured orange in color for theuser to simulate the general appearance of the outer skin of apumpkin, and having facial indicia including at least two of an eye, a nose and a mouth onthe orange color outer surface for forming a face pattern on saidorange color outer surface to simulate the general outer appearanceof a decorative pumpkin with a face thereon, said trash or leaf bag having first and second opposite ends, at leastsaid second end having an opening extending substantially acrossthe full width of said trash or leaf bag for receiving the trash fillingmaterial, wherein when said trash or leaf bag is filled with trash filling materialand closed, said trash or leaf bag takes the form and generalappearance of a pumpkin with a face thereon. All of the independent claims on appeal, namely 37, 52, 72, and 74, containlimitations that the bag must be “premanufactured orange in color,” have “facial indicia,”have openings suitable for filling with trash material, and that when filled, the bag musthave a generally rounded appearance, like a pumpkin. Independent claims 37, 52, and72 add the limitation that the bag’s height must at least 36 inches. Claim 72 requires thatthe bag be made of a “weatherproof material,” and claim 74, as shown above, requires thatthe bag be “waterproof.” Claim 52 recites a “method of assembling” a bag with the generalcharacteristics of apparatus claim 37. B The prior art cited by the Board includes: (1) pages 24-25 of a book entitled “A Handbook for Teachers ofElementary Art,” by Holiday Art Activities (“Holiday”), describing howto teach children to make a “Crepe Paper Jack-O-Lantern” out of astrip of orange crepe paper, construction paper cut-outs in the shapeof facial features, and “wadded newspapers” as filling; (2) page 73 of a book entitled “The Everything Book for Teachers ofYoung Children,” by Martha Shapiro and Valerie Indenbaum(“Shapiro”), describing a method of making a “paper bag pumpkin” bystuffing a bag with newspapers, painting it orange, and then paintingon facial features with black paint; (3) U.S. Patent No. 3,349,991 to Leonard Kessler, entitled “FlexibleContainer” (“Kessler”), describing a bag apparatus wherein the bagclosure is accomplished by the use of folds or gussets in the bagmaterial; (4) U.S. Patent No. Des. 310,023, issued August 21, 1990 to Dembiczak(“Dembiczak ’023″), a design patent depicting a bag with a jack-o’-lantern face; (5) U.S. Patent No. Des. 317,254, issued June 4, 1991 to Dembiczak(“Dembiczak ’254″), a design patent depicting a bag with a jack-o’-lantern face; and, 6 Prior art “conventional” plastic lawn or trash bags (“the conventionaltrash bags”). Using this art, the Board affirmed the Examiner’s final rejection of all the independentclaims (37, 52, 72, 74) under 35 U.S.C. � 103, holding that they would have been obviousin light of the conventional trash bags in view of the Holiday and Shapiro references. TheBoard determined that, in its view of the prior art, “the only difference between theinvention presently defined in the independent claims on appeal and the orange plastictrash bags of the prior art and the use of such bags resides in the application of the facialindicia to the outer surface of the bag.”
Dembiczak, slip op. at 18. The Board further heldthat the missing facial indicia elements were provided by the Holiday and Shapiroreferences’ description of painting jack-o’-lantern faces on paper bags.
See id. at 18-19. Dependent claims 49 and 79, which include a “gussets” limitation, were consideredobvious under similar reasoning, except that the references cited against them includedKessler.
See id. at 7. The Board also affirmed the Examiner’s obviousness-type double patentingrejection of all the independent claims in light of the two Dembiczak design patents (’023and ’254) and Holiday.
See id. at 12. The Board held that the design patents depict agenerally rounded bag with jack-o’-lantern facial indicia, and that the Holiday referencesupplies the missing limitations, such as the “thin, flexible material” of manufacture, theorange color, the initially-open upper end, and the trash filling material. The Board alsostated that the various limitations of the dependent claims–
e.g., color, the inclusion ofleaves as stuffing, and the dimensions–would all be obvious variations of the depictionsin the Dembiczak design patents.
See id. at 8-9. In addition, using a two-way test forobviousness-type double patenting, the Board held that the claims of the Dembiczakdesign patents “do not exclude” the additional structural limitations of the pending utilityclaims, and thus the design patents were merely obvious variations of the subject matterdisclosed in the utility claims.
See id. at 11. The Board further upheld, on similar groundsand with the inclusion of the Kessler reference, the obviousness-type double patentingrejection of dependent claim 49.
See id. at 12. This appeal followed, vesting this court with jurisdiction pursuant to 28 U.S.C.��1295(a)(4)(A) (1994). II A claimed invention is unpatentable if the differences between it and the prior art”are such that the subject matter as a whole would have been obvious at the time theinvention was made to a person having ordinary skill in the art.” 35 U.S.C. � 103(a) (Supp.1998);
see Graham v. John Deere Co., 383 U.S. 1, 14, 148 USPQ 459, 465 (1966). Theultimate determination of whether an invention is or is not obvious is a legal conclusionbased on underlying factual inquiries including: (1) the scope and content of the prior art;(2) the level of ordinary skill in the prior art; (3) the differences between the claimedinvention and the prior art; and (4) objective evidence of nonobviousness.
See Graham,383 U.S. at 17-18, 148 USPQ at 467;
Miles Labs, Inc., Inc.�v. Shandon Inc., 997 F.2d 870,877, 27 USPQ2d 1123, 1128 (Fed. Cir. 1993). We therefore review the ultimatedetermination of obviousness without deference to the Board, while examining any factualfindings for clear error.
See,
e.g.,
In re Zurko, 142�F.3d 1447, 1459, 46 USPQ2d 1691,1700 (Fed. Cir.) (en banc),
cert. granted, 119�S. Ct. 401 (1998). A Our analysis begins in the text of section 103 quoted above, with the phrase “at thetime the invention was made.” For it is this phrase that guards against entry into the”tempting but forbidden zone of hindsight,”
see Loctite Corp. v. Ultraseal Ltd., 781 F.2d861, 873, 228 USPQ 90, 98 (Fed. Cir. 1985),
overruled on other grounds by NobelpharmaAB v. Implant Innovations, Inc., 141 F.3d 1059, 46 USPQ2d 1097 (Fed. Cir. 1998), whenanalyzing the patentability of claims pursuant to that section. Measuring a claimedinvention against the standard established by section 103 requires the oft-difficult butcritical step of casting the mind back to the time of invention, to consider the thinking ofone of ordinary skill in the art, guided only by the prior art references and the then-accepted wisdom in the field.
See,
e.g.,
W.L. Gore & Assoc., Inc. v. Garlock, Inc., 721F.2d 1540, 1553, 220 UPSQ 303, 313 (Fed. Cir. 1983). Close adherence to thismethodology is especially important in the case of less technologically complex inventions,where the very ease with which the invention can be understood may prompt one “to fallvictim to the insidious effect of a hindsight syndrome wherein that which only the inventortaught is used against its teacher.”
Id. Our case law makes clear that the best defense against the subtle but powerfulattraction of a hindsight-based obviousness analysis is rigorous application of therequirement for a showing of the teaching or motivation to combine prior art references.
See,
e.g.,
C.R. Bard, Inc. v. M3 Sys., Inc., 157 F.3d 1340, 1352, 48 USPQ2d 1225, 1232(Fed. Cir. 1998) (describing “teaching or suggestion or motivation [to combine]” as an”essential evidentiary component of an obviousness holding”);
In re Rouffet, 149�F.3d1350, 1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998) (“the Board must identify specifically. . . the reasons one of ordinary skill in the art would have been motivated to select thereferences and combine them”);
In re Fritch, 972 F.2d 1260, 1265, 23�USPQ2d 1780, 1783(Fed. Cir. 1992) (examiner can satisfy burden of obviousness in light of combination “onlyby showing some objective teaching [leading to the combination]“);
In re Fine, 837 F.2d1071, 1075, 5 USPQ2d 1596, 1600 (Fed. Cir. 1988) (evidence of teaching or suggestion”essential” to avoid hindsight);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776F.2d 281, 297, 227 USPQ 657, 667 (Fed. Cir. 1985) (district court’s conclusion ofobviousness was error when it “did not elucidate any factual teachings, suggestions orincentives from this prior art that showed the propriety of combination”).
See also Graham,383 U.S. at 18, 148 USPQ at 467 (“strict observance” of factual predicates to obviousnessconclusion required). Combining prior art references without evidence of such asuggestion, teaching, or motivation simply takes the inventor’s disclosure as a blueprintfor piecing together the prior art to defeat patentability–the essence of hindsight.
See,
e.g.,
Interconnect Planning Corp. v. Feil, 774 F.2d 1132, 1138, 227 USPQ 543, 547 (Fed.Cir. 1985) (“The invention must be viewed not with the blueprint drawn by the inventor, butin the state of the art that existed at the time.”). In this case, the Board fell into thehindsight trap. We have noted that evidence of a suggestion, teaching, or motivation to combinemay flow from the prior art references themselves, the knowledge of one of ordinary skillin the art, or, in some cases, from the nature of the problem to be solved,
see Pro-Mold &Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1630 (Fed.Cir. 1996),
Para-Ordinance Mfg. v. SGS Imports Intern., Inc., 73 F.3d 1085, 1088, 37USPQ2d 1237, 1240 (Fed. Cir. 1995), although “the suggestion more often comes fromthe teachings of the pertinent references,”
Rouffet, 149 F.3d at 1355, 47�USPQ2d at 1456. The range of sources available, however, does not diminish the requirement for actualevidence. That is, the showing must be clear and particular.
See,
e.g.,
C.R. Bard,157�F.3d at 1352, 48 USPQ2d at 1232. Broad conclusory statements regarding theteaching of multiple references, standing alone, are not “evidence.”
E.g.,
McElmurry v.Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27�USPQ2d 1129, 1131 (Fed. Cir.1993) (“Mere denials and conclusory statements, however, are not sufficient to establisha genuine issue of material fact.”);
In re Sichert, 566 F.2d 1154, 1164, 196�USPQ 209, 217(CCPA 1977) (“The examiner’s conclusory statement that the specification does not teachthe best mode of using the invention is unaccompanied by evidence or reasoning and isentirely inadequate to support the rejection.”). In addition to demonstrating the proprietyof an obviousness analysis, particular factual findings regarding the suggestion, teaching,or motivation to combine serve a number of important purposes, including: (1) clearexplication of the position adopted by the Examiner and the Board; (2) identification of thefactual disputes, if any, between the applicant and the Board; and (3) facilitation of reviewon appeal. Here, however, the Board did not make particular findings regarding the locusof the suggestion, teaching, or motivation to combine the prior art references. All the obviousness rejections affirmed by the Board resulted from a combinationof prior art references,
e.g., the conventional trash or yard bags, and the Holiday andShapiro publications teaching the construction of decorated paper bags.
See Dembiczak,slip op. at 6-7. To justify this combination, the Board simply stated that “the Holiday andShapiro references would have suggested the application of . . . facial indicia to the priorart plastic trash bags.”
Id. at 18-19. However, rather than pointing to specific informationin Holiday or Shapiro that suggest the combination with the conventional bags, the Boardinstead described in detail the similarities between the Holiday and Shapiro referencesand the claimed invention, noting that one reference or the other–in combination with eachother and the conventional trash bags–described all of the limitations of the pendingclaims.
See id. at 18-28. Nowhere does the Board particularly identify any suggestion,teaching, or motivation to combine the children’s art references (Holiday and Shapiro) withthe conventional trash or lawn bag references, nor does the Board make specific–or eveninferential–findings concerning the identification of the relevant art, the level of ordinaryskill in the art, the nature of the problem to be solved, or any other factual findings thatmight serve to support a proper obviousness analysis.
See,
e.g.,
Pro-Mold & Tool, 75�F.3dat 1573, 37 USPQ2d at 1630. To the contrary, the obviousness analysis in the Board’s decision is limited to adiscussion of the ways that the multiple prior art references can be combined to read onthe claimed invention. For example, the Board finds that the Holiday bag reference depictsa “premanufactured orange” bag material,
see Dembiczak, slip op. at 21, finds that Shapiroteaches the use of paper bags in various sizes, including “large”,
see id. at 22-23, andconcludes that the substitution of orange plastic for the crepe paper of Holiday and thepaper bags of Shapiro would be an obvious design choice,
see id. at 24. Yet thisreference-by-reference, limitation-by-limitation analysis fails to demonstrate how theHoliday and Shapiro references teach or suggest their combination with the conventionaltrash or lawn bags to yield the claimed invention.
See Rouffet, 149 F.3d at 1357, 47USPQ2d at 1459 (noting Board’s failure to explain, when analyzing the prior art, “whatspecific understanding or technical principle . . . would have suggested the combination”). Because we do not discern any finding by the Board that there was a suggestion, teaching,or motivation to combine the prior art references cited against the pending claims, theBoard’s conclusion of obviousness, as a matter of law, cannot stand.
See C.R. Bard, 157F.3d at 1352, 48 USPQ2d at 1232;
Rouffet, 149 F.3d at 1359, 47 USPQ2d at 1459;
Fritch, 972 F.2d at 1265, 23 USPQ2d at 1783;
Fine, 837�F.2d at 1075, 5 USPQ2d at 1600;
Ashland Oil, 776 F.2d at 297, 227 USPQ at 667. B The Commissioner of Patents and Trademarks (“Commissioner”) attempts to justifythe Board’s decision on grounds different from that relied upon by the Board, arguing thatone of ordinary skill in the art would have been motivated to combine the references. Ofcourse, in order to do so, the Commissioner must do what the Board did not do below:make specific findings of fact regarding the level of skill in the art (“a designer andmanufacturer of trash and leaf bags, particularly one specializing in the ornamental andgraphic design of such bags”),
Resp’t Br. at 14, the relationship between the fields ofconventional trash bags and children’s crafts, respectively (“[t]he artisan would also havebeen well aware of the ancillary, corollary, and atypical uses of ‘trash’ bags such as theirapplication in hobby and art projects”),
Resp’t Br. at 15, and the particular features of theprior art references that would motivate one of ordinary skill in a particular art to selectelements disclosed in references from a wholly different field (“a designer andmanufacturer of trash and leaf bags would have recognized the paper bag in Shapiro tobe a trash bag and therefore would have been motivated to combine it with the admittedprior art plastic trash and leaf bags to arrive at the claimed invention”),
Resp’t Br. at 15. The Commissioner also appears to cite additional references in support of his obviousnessanalysis, noting that at least two design patents (in the record but not cited against thepresently pending claims) teach the placement of “graphical information, including text,designs, and even facial indicia, to colored bags.”
Resp’t Br. at 16. This new analysis,apparently cut from whole cloth in view of appeal, does little more than highlight theshortcomings of the decision below, and we decline to consider it.
See,
e.g.,
In reRobertson, 169 F.3d 743, __, 49 USPQ2d 1949, 1951 (Fed. Cir. 1999) (“We decline toconsider [the Commissioner's] newly-minted theory as an alternative ground for upholdingthe agency’s decision.”);
In re Soni, 54 F.3d 746, 751, 34 USPQ2d 1684, 1688 (Fed. Cir.1995);
In re Hounsfield, 699�F.2d 1320, 1324, 216 USPQ 1045, 1049 (Fed. Cir. 1983)(rejecting an “attempt[ ] by the Commissioner ‘to apply a new rationale to support therejection.’”);
see also 35�U.S.C. � 144 (1994) (an appeal to the Federal Circuit “is takenon the record before The Patent and Trademark Office”). Because the Board has notestablished a
prima facie case of obviousness,
see In re Bell, 991 F.2d 781, 783, 26USPQ2d 1529, 1531 (Fed. Cir. 1993) (“The PTO bears the burden of establishing a caseof
prima facie obviousness.”), we therefore reverse the obviousness rejections, and haveno need to address the parties’ arguments with respect to secondary factors. III Dembiczak also asks this court to reverse the Board’s rejection of the pendingclaims for obviousness-type double patenting, which is a judicially-created doctrine thatseeks to prevent the applicant from expanding the grant of the patent right beyond thelimits prescribed in Title 35.
See,
e.g.,
In re Braat, 937 F.2d 589, 592, 19 USPQ2d 1289,1291-92 (Fed. Cir. 1991);
In re Longi, 759 F.2d 887, 892, 225 USPQ 645, 648 (Fed. Cir.1985).
See also 35 U.S.C. � 154(a)(2) (Supp. 1998) (discussing patent term). Thedoctrine prohibits claims in a second patent which define “merely an obvious variation” ofan invention claimed by the same inventor in an earlier patent.
Braat, 937�F.2d at 592, 19USPQ2d at 1292 (quoting
In re Vogel, 422 F.2d 438, 441, 164�USPQ 619, 622 (CCPA1970)). Thus, unless a claim sought in the later patent is patentably distinct from theclaims in an earlier patent, the claim must be rejected.
See In re Goodman, 11 F.3d 1046,1052, 29 USPQ2d 2010, 2015 (Fed. Cir. 1993);
Vogel, 422 F.2d at 441, 164 USPQ at 622. This question is one of law, which we review
de novo.
See Goodman, 11 F.3d at 1052,29 USPQ2d at 2015;
Texas Instruments Inc. v. United States Int’l Trade Comm’n, 988 F.2d1165, 1179, 26 USPQ2d 1018, 1029 (Fed. Cir. 1993). A The law provides that, in some very rare cases, obvious-type double patenting maybe found between design and utility patents.
See Carman Indus., Inc. v. Wahl, 724 F.2d932, 939-40, 220 USPQ 481, 487 (Fed. Cir. 1983) (noting that, while theoretically possible,”[d]ouble patenting is rare in the context of utility versus design patents”);
In re Thorington,418 F.2d 528, 536-37, 163 USPQ 644, 650 (CCPA 1969) (Double patenting between adesign and utility patent is possible “if the features producing the novel aesthetic effect ofa design patent or application are the same as those recited in the claims of a utility patentor application as producing a novel structure.”);
In re Phelan, 205 F.2d 183, 98 USPQ 156(CCPA 1953);
In re Barber, 81�F.2d 231, 28 USPQ 187 (CCPA 1936);
In re Hargraves, 53F.2d 900, 11 USPQ 240 (CCPA 1931). In these cases, a “two-way” test is applicable.
See Carman, 724 F.2d at 940, 220 USPQ at 487. Under this test, the obviousness-type doublepatenting rejection is appropriate only if the claims of the two patents cross-read, meaningthat “the test is whether the subject matter of the claims of the patent sought to beinvalidated would have been obvious from the subject matter of the claims of the otherpatent, and vice versa.”
Id., 220 USPQ at 487.
See also Braat, 937 F.2d at 593, 19USPQ2d at 1292 (explaining two-way test). B In making its double patenting rejection, the Board concluded that all but one of thepending claims of Dembiczak’s utility application would have been merely an obviousvariation of the claims of the earlier-issued design patents–the Dembiczak ’023 and ’254references–in light of the Holiday reference. The remaining claim, dependent claim 49,was judged obvious in light of the combination of the Dembiczak design patents, Holiday,and the Kessler reference. Acknowledging that the two-way test was required by
Carman, 724 F.2d at 940, 220USPQ at 487, the Board concluded that “the design claimed in each of appellants’ designpatents does not exclude the features pertaining to the construction and color of the bag,the use of a plastic material for making the bag, the size or thickness of the bag . . . or theuse of various types of filling material . . . . The particular details of the facial indicia wouldhave been a matter of design choice as evidenced by the Holiday handbook,” and thattherefore, in view of Holiday, the claims of the design patents were obvious variants of thepending utility patent claims.
See Dembiczak, slip op. at 11. We disagree. In order for adesign to be unpatentable because of obviousness, there must first be a basic designreference in the prior art, the design characteristics of which are “basically the same as theclaimed design.”
In re Borden, 90 F.3d 1570, 1574, 39 USPQ2d 1524, 1526 (Fed. Cir.1996);
In re Rosen, 673 F.2d 388, 391, 213 USPQ 347, 350 (CCPA 1982). The phrase”having facial indicia thereon” found in the claims of the pending utility application is nota design reference that is “basically the same as the claimed design.”
Borden, 90 F.3d at1574, 39 USPQ2d at 1526. In fact, it describes precious little with respect to designcharacteristics. The Board’s suggestion that the design details were simply “a matter ofdesign choice” evinces a misapprehension of the subject matter of design patents.
E.g.,
Carman, 724 F.2d at 939 n.13, 220 USPQ at 486 n.13 (“Utility patents afford protection forthe mechanical structure and function of an invention whereas design patent protectionconcerns the ornamental or aesthetic features of a design.”) Indeed, we note that the twodesign patents at issue here–the Dembiczak ’023 and ’254 patents–were considerednonobvious over each other, and were even the subject of a restriction requirement.
See35 U.S.C. � 121 (1994) (“If two or more independent and distinct inventions are claimedin one application, the Commissioner may require the application to be restricted to oneof the inventions.”); 37 C.F.R. ��1.142. The position adopted by the Board–that a textualdescription of facial indicia found in the claims of the utility patent application makesobvious the specific designs claimed in the (patentably distinct) Dembiczak designpatents–would presumably render obvious, or even anticipate, all design patents wherea face was depicted on a bag. But this, of course, is not the law; the textual descriptioncannot be said to be a reference “basically the same as the claimed design,” of the designpatents at issue here.
Borden, 90 F.3d at 1574, 39 USPQ2d at 1526 (internal quotationmarks omitted). The Board’s conclusion of obviousness is incorrect. Because we find that the Board erred in concluding that the design patents wereobvious variants of the pending utility claims, we need not address the other prong of thetwo-way double patenting test–whether the pending utility claims are obvious variationsof the subject matter claimed in the design patents.
See Carman, 724 F.2d at 939, 220USPQ at 487 (both prongs of the two-way test required for obviousness-type doublepatenting). The double patenting rejections are reversed. IV Because there is no evidence in the record of a suggestion, teaching, or motivationto combine the prior art references asserted against the pending claims, the obviousnessrejections are reversed. In addition, because the Board misapprehended the test for obviousness-type double patenting, and because the pending utility claims donot render obvious the design patents, the double patenting rejections are also reversed.
REVERSED
IN RE ANITA DEMBICZAK and BENSON ZINBARG, Appellants. 98-1498 United States Court of Appeals for the Federal Circuit (Serial No. 08/427,732) April 28, 1999 David P. Gordon, of Stamford, Connecticut, argued for appellant. Of counselwas Thomas A. Gallagher, of Stamford, Connecticut. John M. Whealan, Associate Solicitor, Office of the Solicitor, of Arlington,Virginia, argued for appellee. With him on the brief were Albin F. Drost, ActingSolicitor, and David R. Nicholson, Associate Solicitor. Appeal from Patent and Trademark Office Board of Patent Appeals and Interferences Before MAYER, Chief Judge, MICHEL and CLEVENGER, Circuit Judges.
